Trademarks 2013, Published by Getting the Deal Through, Chapter

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KOSOVO Karanović & Nikolić 6 Examination procedure What procedure does the trademark office follow when determining whether to grant a registration Are applications examined for potential conflicts with other trademarks May applicants respond to rejections by the trademark office The examination report consists of formal requirements and of material conditions for the trademark registration. Formal examination consists of verifying the validity of the filed trademark application (consisting of the trademark application form, the mark claimed, list of goods and services to which the mark applies, and power of attorney should the applicant be represented by someone). Where the examiner finds that an application is invalid, the examiner will send an examination report to the applicant specifying the irregularities noted and inviting the applicant to remedy the deficiencies within a provided time limit. If the applicant fails to remedy the deficiencies in the application within the time limit assigned, or if the applicant fails to pay the fee for remedying the deficiencies, the examiner will issue a procedural order rejecting the application. Material examination takes place once the application is found to be in good order. The material examination procedure aims previously registered trademarks. If there are objections, the Patent Office will notify the applicant of this in writing, asserting the reasons why the mark cannot be registered and asking the applicant to submit its comments within the specified time limit of 60 days. If the applicant does not act upon the Patent Office’s request, or if it does but the Patent Office nevertheless finds that the mark may not be registered, it will decide to reject the application. The Patent Office can also decide to accept the application partially. 7 Use of a trademark and registration Does use of a trademark or service mark have to be claimed before registration is granted or issued Does proof of use have to be submitted Are foreign registrations granted any rights of priority If registration is granted without use, is there a time by which use must begin either to maintain the registration or to defeat a third-party challenge on grounds of non-use Use of a mark prior to registration is not mandatory. However, following the trademark registration, its use is compulsory. The Patent Office may, at the request of an interested party, terminate a trademark if the trademark holder or authorised person fails, without a justified reason, to use the trademark on the domestic market for an uninterrupted five-year period as of the day on which the trademark was registered, or from the day of its last use. In such a case, the burden of proof is on the trademark holder, so the trademark holder or authorised person must prove that the trademark has been used. Advertising the registered trademark without the possibility of supplying the goods or using the services for which the trademark was registered, payment of the fees for extending trademark validity or concluding contracts regarding the trademark, such as assignment contract or licence agreement, will not be considered as trademark ‘use’. 8 Appealing a denied application Is there an appeal process if the application is denied Where an application is denied, an appeal may be filed with the administrative court within three months as of the date the Patent Office decision was made. In the appeal proceedings, the Patent Office is entitled to voluntarily appear and be heard or may be compelled to do so by the court. 9 Third-party opposition May a third party oppose registration, or seek cancellation of a trademark or service mark What are the primary bases of such challenges, and what are the procedures The Patent Office may, upon a request filed by an interested party, pass a decision on a trademark termination on the following grounds: tical to the goods or services covered by a trademark filed or istered earlier and the goods or services covered by both trademarks are similar or identical, there is a reasonable likelihood of confusion on the part of the public, including the likelihood that the public will associate the trademark for which registration is a reputation in Kosovo, and advantage of, or be detrimental to, the distinctive character or reputation of a trademark filed or registered earlier. There is no specific procedure for the filing of opposition other than the ordinary filing procedure before the Patent Office. 10 Duration and maintenance of registration How long does a registration remain in effect and what is required to maintain a registration Is use of the trademark required for its maintenance If so, what proof of use is required The trademark lasts for 10 years as of the date of filing of the application for registration, and is indefinitely renewable for further 10-year periods upon payment of prescribed administrative fees. A request for trademark renewal should be filed with the Patent Office before the expiration of the current 10-year term and upon the information provided by the Patent Office 11 The benefits of registration What are the benefits of registration The benefits of registering a trademark are multiple, but the main benefit is protection. The trademark holder has the exclusive right to use the trademark for goods or services to which it relates, and to prohibit others from unauthorised use of an identical or similar mark for marking identical or similar goods or services, if such could cause confusion in commerce. 12 Licences May a licence be recorded against a mark in the jurisdiction Are there any benefits to doing so or detriments to not doing so Yes, it is possible to record a licence against a mark in Kosovo. A licence to use a registered trademark may be general or limited. It must be in writing, signed by or on behalf of the grantor of the licence and entered into an appropriate register upon the payment of administrative fees. The Law on Trademarks also defines an exclusive licence which refers to a licence (whether general or limited) authorising the 130 Getting the Deal Through – Trademarks 2013
Karanović & Nikolić KOSOVO licensee, to the exclusion of all other persons, including the grantor of the licence, to use a registered trademark in the manner authorised by the licence. The benefit of registering a trademark licence before the appropriate registrar of the competent authority is that it shall produce an effect in relation to third parties. 13 Assignment What can be assigned All trademarks or a right from an application may be assigned by a contract for all or part of the goods or services for which it is assets need to be assigned to make it a valid transaction. Even though it is not mandatory to register the assignment, we strongly suggest that it be registered. Once registered the assignment can produce legal effects with regards to third parties, and the assignee is formally conferred all the rights stipulated by the assignment. A trademark holder or applicant may assign the trademark or the right (or both) in the trademark application on the basis of an assignment in respect of all or some of the goods and services. The assignment agreement needs to be drawn up in writing and it shall contain: the date of signing the agreement, name and surname or business name, domicile or residence or seat of the contractual parties, the trademark registration number or the number of the trademark application and the amount of the fee, if stipulated. Registration of the assignment of a trademark or the rights arising from the application shall not be granted if such assignment is liable to cause confusion in trade in respect of the type, quality or geographical origin of the goods or services for which the trademark has been registered or in respect of which the trademark application has been filed, unless the assignee disclaims protection for the goods or services in respect of which there is a likelihood of confusion. Registration of the assignment of a trademark or the rights arising from an application that refers only to certain goods or services shall not be approved where the goods or services being assigned are essentially similar to the goods or services in respect of which the mark remains registered for the benefit of the assignor. 14 Assignment documentation What documents are required for assignment and what form must they take Documents required for the registration of assignment before the Patent Office are the assignment form, the evidence of legal grounds for assignment such as the assignment contract and the power of attorney should the request be filed through a representative (legalisation and notarisation of the power of attorney are not required). 15 Validity of assignment Must the assignment be recorded for purposes of its validity In order to be effective against third parties, the assignment contract must be in writing and must be entered into the appropriate trademark register at the Patent Office at the request of a contracting party. 16 Security interests Are security interests recognised and what form must they take Must the security interest be recorded for purposes of its validity or enforceability Trademarks can be transferred as means of a security interest. Even though it is not mandatory to register the security interest over a trademark, we strongly suggest that it is registered. A security interest over a trademark is registered with the appropriate trademark register held at the Patent Office by filing a corresponding form, containing, among other things, a description of the security to be registered. Alongside the form should be provided the evidence of legal grounds for the registration of the security interest, such as an agreement, and the power of attorney in the case of a designated attorney. Please note that there is no specific provision providing for the mandatory notarisation of any of the above-mentioned documents. 17 Markings What words or symbols can be used to indicate trademark use or registration Is marking mandatory What are the benefits of using and the risks of not using such words or symbols No words or symbols are necessary to indicate trademark use or registration, hence the marking is not mandatory. However, if the reproduction of the protected mark in a dictionary, encyclopaedia or similar publication creates an impression that the mark is a generic term for goods or services for which that mark has been protected, the trademark holder may request the publisher to show that in the following edition, at the latest, the mark is accompanied with the symbol ‘®’ as an indication clarifying that it is a protected mark. Therefore, words and symbols are not obligatory, but may be used as an indication that a mark is registered. 18 Trademark enforcement proceedings What types of legal or administrative proceedings are available to enforce the rights of a trademark owner against an alleged infringer or dilutive use of a mark, apart from previously discussed opposition and cancellation actions Are there specialised courts or other tribunals Is there any provision in the criminal law regarding trademark infringement or an equivalent offence As is the case in neighbouring jurisdictions, border control mechanisms are also available to trademark holders. This means that trademark holders, applicants or exclusive licence holders may file a demand for trademark protection at a state border with the customs authorities. The customs authorities are empowered, ex officio or upon request of the trademark holder, to temporarily seize all goods that are either the object or means of an IP rights infringement, whenever there is prima facie evidence establishing that an IP right has been infringed, irrespective of whether they perform supervision ex officio. It is possible to file an opposition in the case of trademark dilution by any person or undertaking by giving written notice of such opposition to the Patent Office within three months’ from the publication of the trademark application in the Official Bulletin. The written notice of opposition must include a statement of the grounds of opposition. www.gettingthedealthrough.com 131
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